Ex Parte Moller et al

Patent Trial and Appeal Board

Mar 26, 2013

10978888 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/978,888 11/01/2004 Andreas Moller MSE-2635 1100
71331 7590 03/26/2013
NIXON PEABODY LLP
300 S. Riverside Plaza, 16th Floor
CHICAGO, IL 60606-6613
EXAMINER
SIEFKE, SAMUEL P
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
03/26/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS MOLLER, JULIAN SCHLAGHECK, CLAUS
STEINBERG, and CHRISTOPH DUNWALD
____________

Appeal 2012-000965
Application 10/978,888
Technology Center 1700
____________

Before BRADLEY R. GARRIS, MARK NAGUMO, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000965
Application 10/978,888

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Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1, 3-17, 19-34, and 36-52 as
unpatentable over Button (US 5,786,584 issued July 28, 1998) in view of
JP 253 (JP 10190253 published July 21, 1998). We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.

Appellants claim an apparatus 20 for covering a glucose meter 30 or
the combination of a glucose meter and such an apparatus wherein the
apparatus comprises a frame/cover 50 having an opening/window 52 for
attachment to the glucose meter and a faceplate 70 disposed between the
frame/cover and the glucose meter (independent claims 1, 8, 15, 26, 37, and
49; Figs. 1-2). In some claims, the faceplate includes an opening (claims 27,
40, and 49).
Representative claims 37 and 40 read as follows:
37. A glucose meter system, comprising:
a glucose meter including a housing, the housing
including a front surface;
a faceplate removably received over at least a portion of
the front surface, the faceplate including a faceplate surface, the
faceplate surface modifying the housing of the glucose meter;
a cover having an attachment member, the attachment
member removably attaching the cover to the front surface of
the glucose meter, the faceplate being disposed between the
cover and the front surface of the glucose meter, the cover
defining a window that allows the faceplate to be viewed
through the cover.
Appeal 2012-000965
Application 10/978,888

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40. The system of Claim 37, wherein the faceplate
includes an opening for viewing another portion of the front
surface.
We will sustain the above rejection for the reasons expressed in the
Answer and below.

The Examiner finds that Button's base unit or housing for a glucose
meter does not include a faceplate as required by the independent claims but
concludes that it would have been obvious to modify the Button housing to
include a frame and a faceplate in order to protect the glucose meter in view
of Figure 24 of JP 253 (Ans. 6).
Concerning the independent claims generally, Appellants argue that
combining the teachings of Button and JP 253 would improperly change the
principles of operation of these references (see, e.g., App. Br. 10).
Specifically, Appellants contend that "modifying the base unit 30 of Button
according to the teachings of JP ‘253 would require completing [sic,
completely] covering the front side of the monitor 27 with the [JP 253] sheet
84 and eliminating an opening along the front side of the monitor 27,
thereby preventing a test strip 26 from being inserted into the port 28 as
taught by Button" (id. at para. bridging 12-13).
We find no persuasive merit in Appellants' contention. "A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007). For this reason,
an artisan would not have combined the applied reference teachings in the
manner urged by Appellants whereby Button's glucose meter would be made
inoperable by covering port 28 with the faceplate or sheet of JP 253.
Appeal 2012-000965
Application 10/978,888

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Appellants also argue that "[t]he teachings of the applied references
are directed to nonanalogous art" (App. Br. 14; bolding deleted).
Two criteria are relevant in determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference is reasonably pertinent to the
particular problem with which the inventor is involved. Wyers Prods.
Group, Inc. v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).
Because Appellants have not applied these criteria, they have failed to
support their argument that the applied prior art is nonanalogous.
In addition, Appellants contend that "Button and JP '253 fail to teach
or suggest a faceplate with an opening as required by claims 27, 40, and 49"
(App. Br. 15; bolding deleted). In this regard, Appellants emphasize that
Button is silent regarding use of a faceplate and that the faceplate of JP 253
fails to include an opening (id. at 16).
As indicated previously, an artisan is a person of ordinary creativity,
not an automaton, and therefore would have provided Button with the
protective faceplate of JP 253 in such a manner as to leave Button's test
strip-receiving port 28 uncovered. We conclude that it would have been
prima facie obvious for the artisan to provide this faceplate with an opening
disposed over port 28 in order to leave it uncovered and thereby operable.
This provision would have been the result of applying ordinary creativity in
providing Button with the protective function of a faceplate while
maintaining port 28 uncovered and operable.
We perceive no convincing merit in Appellants' remaining arguments
regarding certain of the dependent claims.
Appeal 2012-000965
Application 10/978,888

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The unembellished dependent claim 20 argument that the applied
prior art contains no teaching or suggestion of a faceplate with a stylized
design (App. Br. 16-17) is unpersuasive because it fails to address the
Examiner's finding that the stylized design requirement is satisfied by the
rectangular shape of the JP 253 faceplate (Ans. 9).
Appellants' argument concerning information on the faceplate surface
as recited in dependent claims 29, 42, and 50 (App. Br. 17-18) is
unpersuasive because it fails to establish that such printed matter is
functionally related to the substrate. See In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) ("Where the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability.").
Finally, Appellants argue that the applied references fail to teach or
suggest a faceplate with the color properties recited in dependent claims 31-
34 and 44-47 (App. Br. 18-19). Appellants do not explain why they
consider such color properties to patentably distinguish their claimed
apparatus from the prior art. As pointed out by the Examiner in responding
to this argument, "colors are not structural elements of a device" (Ans. 9).
Significantly, Appellants do not address the Examiner's point in their Reply
Brief. Based on the record before us, the argument under consideration is
not persuasive of patentability.

For the reasons stated above and in the Answer, the Examiner's § 103
rejection is sustained.

The decision of the Examiner is affirmed.
Appeal 2012-000965
Application 10/978,888

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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